The defensive trademark system was introduced in Taiwan in 1972, for the purpose of preventing others from counterfeiting the same trademark for registration in different categories for use in different goods or services.At that time, in addition to trademark registration for goods or services of actual use, the same applicant could also register such trademark as a defensive trademark, designated for use on related goods or services that are not identical to the trademark in actual use.The main function of the defensive trademarksystemwas to permit the subsistence of the defensive trademark from being revoked due to non-use for 3 years.
Based on the 2003 amendment to the Trademark Act, the trademark protection was extended from the concept of likelihood of causing confusion to the concept of likelihood of dilution on the reputation or distinctiveness of the mark.Such alteration has already encompassed the function of the defensive trademarksystem. In order to simplify the trademark system the defensive trademarksystem wassubstituted gradually by transferring those defensive trademarks toindependent trademarksupon request before the expiration of their exclusive term of use.
According to TIPO’s trademark registration database, 3,648 defensive trademarks have beensuccessfully transferred to independent trademarks and extended their terms for exclusive use, while2,500 defensive trademarks have been abandoned, since the Trademark Act was amended on November 28, 2003. There is no valid defensive trademarks in the TIPO’s trademark database, which marks the formal retirement of defensive trademarks into the mist of history.